PTAB interprets "searching only a solutions data store" to allow a search of another database due to comprising

Takeaway: On appeal, the Applicant argued that the claim language "searching only a solutions data store" wasn't disclosed by the reference, which taught that both the "potential solutions" and the "approved fix" databases were searched. The Board disagreed, noting Applicant's use of the transition term "comprising" in the method claim. The reference system performed a first search in one database, and conditionally performed a second search on a different database. The scenario where no second search occurred was clearly covered by the claim language. An additional search of a second database wasn't excluded ("comprising") so the second scenario was also in the scope of the claim. (Ex parte Fisher, PTAB 2015.)

Details:

Ex parte Fisher
Appeal 2013-002943; Appl. No. 11/833,949; Tech. Center 3600
Decided:  November 24, 2015

The application on appeal dealt with automated technical support. A client application generated a system configuration profile and transferred it to a server. The server searched a knowledge base for relevant problem resolution information, using the profile to narrow the search. This problem resolution information was sent to the client in the form of a hyperlink to a web pages "instructive of" a problem solution.

A representative claim on appeal read:

1. A method for obtaining customer support, the method comprising:
[1] transmitting parameters specific to an end user product
    to a network–based application
          operable to dynamically generate a web page
               instructive of a solution to a problem associated with the end user product
          based on the parameters
          by searching only a solutions data store
               that stores a plurality of solutions
                    which were moved to the solutions data store from a predisposition solutions data store,
                         the predisposition solutions data store storing a plurality of potential solutions
                              that are accessible by technical support center agents
                              but inaccessible to an end user,
                    when each of the plurality of solutions
                         was validated and approved for use
                              based on implementation of the potential solutions
                                    by the technical support center agents;
[2] receiving an interactive link to the dynamically generated web page; and
[3] browsing the dynamically generated web page by selecting the interactive link.
(Emphasis added.)

The claim language on appeal was that emphasized above. The Examiner used a combination of four references to reject as obvious, and relied on Wing for the above-emphasized feature. The Applicant argued that the claims require searching only one data store – one having solutions moved from another store of solutions inaccessible to an end user.” The Applicant argued that in Wing, "both the ‘potential solutions’ (those not formally approved) and the ‘approved fix’ databases are searched ... regardless of where they are from.”

In the Answer, the Examiner maintained the rejection. The Examiner explicitly mapped the claimed "predisposition database" to Wing's attention file and the claimed "solutions data store" to Wing's dynamic disposition database. The Examiner characterized Wing's teachings as follows:

• "searching only a solutions data store that stores a plurality of solutions which were moved to the solutions data store from a predisposition solutions data store"
  [Wing: content developer can consider moving potential fixes from attention files to dynamic disposition database that stores approved fixes]
• predisposition solutions data store storing a plurality of potential solutions that are accessible by technical support center agents but inaccessible to an end user
  [Wing: attention files are only accessible by content developer/technician and not inaccessible by enduser]

The Applicant filed a Reply Brief to make several points. One, the Examiner equated Wing's dynamic disposition database with the claimed solutions data store, but "nowhere does Wing teach that only the disposition database is searched." Two, the "Examiner is incorrect that the 'attention files' of Wing are only accessible by content developer/technician." Wing merely stated that these files are accessible by a content developer, but "mentions nothing about others (e.g., end users) not being able to access the potential solutions therein.

The Board affirmed the obviousness rejection and discussed three different sub-issues. First, the method claim included only three steps, and almost all of step [1] related to activity after the transmitting, with language describing how the transmitted parameters affect a remote database. All this language was non-functional descriptive material, and thus given no patentable weight (citing King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)). Second, the Board found it "predictable to narrow the domain of a search in general," since it is "predictable to delete a step for the purpose of removing its function."

Finally, even giving patentable weight to the "searching only a solutions data store," limitation, the Board found that the Wing reference disclosed this feature. Wing's system performed a first search in one database, and conditionally performed a second search on a different database, depending on the results. A scenario where only the first search occurred was clearly covered by "searching only." And the use of "comprising" meant an additional search of a second database wasn't excluded, so the second scenario was also in the scope of the claim.

Here's the Board's full explanation:

     Wing describes searching only its solutions set database and that after making that search, only of that database, [when] an approved fix for a reported problem does not appear in the database of approved fixes, a potential solution, i.e. a solution that has not been formally administered and added to the database of approved fixes, may be provided to the end-user, to resolve their issues based on the live creation of a solution set.
     This second step may or may not occur by Wing’s wording. In the instance where it does not occur, the search only of the approved database is clear on its face. In the instance where it does occur, Wing does not say another database is searched, but rather that the technician himself creates a potential solution set. Even if the technician performs a search to create that solution set, Wing describes this as occurring subsequent to searching only the approved fixes. As the claim uses the transition phrase “comprising,” additional unrecited steps will not remove art from the scope of the claim.

My two cents: Oh, where do I begin ... Here's my biggest beef with this decision: it's a leap to characterize narrowing a search ("searching only") as removing a step. OK, there were two databases here. If you understand "search" to mean "search both" or "search all" then, yeah, "search only one" is narrowing. But who says a POSITA understands plain old search in this context to mean "search all" ? The Board offered no explanation, evidence, or reasoning about this, just the sweeping generalization that narrowing a search is analogous to removing a step, which is generally predictable and thus obvious. Note that the Examiner didn't use this rationale, and instead cited a specific benefit mentioned in the Wing reference.

Moving on to the "searching only" limitation. The Applicant understood Wing to teach searching two databases, and argued that the claim language excluded this. The Examiner never explained how "searching only a solutions data store" read on two searches. The Board came up with a clever (devious?) explanation involving additional steps and "comprising." To me, that explanation reads "only" out of the claim. "`Comprising' is not a weasel word with which to abrogate claim limitations." Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.Cir.1998).

Unless you look at it another way ?? The Applicant characterized Wing as a search of two databases – to me, clearly excluded by "searching only a solutions data store." Is the Board instead characterizing Wing as two searches? The first search is covered by the claim, because it is indeed  limited to the particular database recited in the claim (approved fixes = "solutions data store"). The second, separate, search of the potential fixes database is simply an extra step not excluded by the claim.

Is that a fair reading of Wing ... two separate searches, as compared to one search of two databases? Assuming there is a difference to a POSITA, which would a POSITA understand Wing to teach? I'd be surprised if the patent attorney writing the Wing spec meant to make such a distinction. In fact, the drafter of Wing would want his description to read on both implementations, right?

How do you craft a claim that avoids Wing? Do you need "consisting of" rather than "comprising"? Do you need to completely re-think the claim strategy? (Which can be very difficult to pull off when you're stuck with the spec that was filed.)

This post is about the Fisher decision and "searching only." But what if you're drafting Wing and want to cover both implementations: two separate searches; one search of two databases. Is there a way to craft a claim that covers both? Or maybe it's a good idea to have different claim sets directed to different implementations. Sometimes we patent attorneys get hung up on having one claim that captures everything.

Finally, Applicants should take heed of the Board's warning about including receiver behavior in a sender claim (or vice versa). Same goes for including server behavior in a client claim (or vice versa). I see this mentioned a lot in appeal decisions.